WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wrenchead.com, Inc. v. Alison Hammersla
Case No. D2000-1222
1. The Parties
1.1 The Complainant is Wrenchead.com, Inc., a corporation organized under the laws of the State of Delaware, United States of America, having its principal place of business at 108 Corporate Park Drive, White Plains, New York, United States of America.
1.2 The Respondent is Allison Hammersla, an individual having an address at 63 Elizabeth Avenue, Stamford, Connecticut, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <wrenchheadpro.com>, which domain name is registered with Register.com, Inc., based in New York, New York, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 14, 2000, and the signed original together with four copies was received on September 18, 2000.
3.2 On September 19, 2000, a Request for Registrar Verification was transmitted to the registrar, Register.com, Inc. ("RI") requesting it to: (1) confirm that the domain name at in issue is registered with RI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On September 21, 2000, RI confirmed by reply e-mail that the domain name is registered with RI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules.
3.5 No formal deficiencies having been recorded, on September 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, RI and ICANN), setting a deadline of October 16, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in RI’s confirmation. In addition, the complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On October 25, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On November 15, 2000, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant registered the trademarks W WRENCHEAD.COM (AND DESIGN), WRENCHEAD.COM, and W WWW.WRENCHEAD.COM (AND DESIGN) in connection with computer software that enables businesses to order automotive products from suppliers over a global computer network with the United States Patent Office ("USPTO") on March 28, 2000, (with a first-use date of March 9, 1999), on March 21, 2000, (with a first-use date of March 9, 1999), and on March 21, 2000, (with a first-use date of April 13, 1999), respectively.
4.2 Complainant has applied for trademarks with the USPTO for WRENCHEAD PRO, on April 21, 2000, for WRENCHEAD PRO MANAGER, on June 13, 2000, for WRENCHEAD on June 13, 2000, and for WRENCHEAD.COM (AND DESIGN) on April 26, 1999.
4.3 In addition, Complainant claims common law trademarks in the marks WRENCHEAD, WRENCHEAD.COM, WRENCHEAD PRO, WRENCHEAD PRO LITE, and WRENCHEAD PRO MANAGER.
4.4 Among others, Complainant has registered the following domain names on the following dates: <wrencheadpro.com> (May 15, 1999), <wrencheadpro.net> (March 8, 2000), <wrencheadpro.org> (May 15, 1999), <wrenchheadpro.net> (March 8, 2000), and <wrenchheadpro.org> (March 8, 2000).
4.5 On February 20, 2000, Respondent registered the domain name <wrenchheadpro.com>.
4.6 Respondent has used the domain name to present a picture of a dog, to refer parties who have arrived at the site to "www.afternic.com", and to refer parties looking for wrenchead to "www.wrenchead.com" or "www.wrencheadpro.com". The site also features links to competitors of complainant. Complaint, Annex 10.
4.7 After Complainant sent the cease and desist letter referenced in paragraph J(7) of the complaint, the domain name at issue was offered for auction on the "Afternic.com" website, with a minimum bid of $250. Complaint, Annex 11. The offer was made by "Alibob." A series of bids, offers, delistings, and relistings transpired. When Complainant was apparently successful in the auction, the auction process was manipulated so that Complainant was unable to purchase the name at the successful bid price. Afternic determined that there may have been fraudulent activity involved in the bidding and listing process. Complaint, Annex 21.
4.8 Complainant has sent Respondent a letter requesting transfer of the domain name at issue. Respondent did not respond to the request.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue is confusingly similar to the trademarks in which the Complainant has rights.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011.
6.6 Respondent apparently conducted an auction sale of the name at which Respondent manipulated the auction process, so as to preclude the Complainant from completing the purchase of the name according to the terms of the auction. Offering the name for sale at an auction is evidence of bad faith registration and use. Gateway, Inc. v. David Ayers, ICANN Case No. D2000-0106; The Chase Manhattan Corporation v. Jehovah Technologies Pte Ltd, ICANN Case No. D2000-0388. Moreover, Respondent's manipulation of the auction process is further evidence of bad faith registration and use. 3636275 Canada, dba eResolution v. eResolution.com, ICANN Case No. D2000-0110.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <wrenchheadpro.com> be transferred to the Complainant.
M. Scott Donahey
Dated: December 12, 2000